Re: Opposition by Uber Geeks Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Uber Technologies Inc to remove trade mark number 1177725 (classes 37, 41 and 42) - Über Geeks (stylised)

[2021] ATMO 4

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re: Opposition by Uber Geeks Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Uber Technologies Inc to remove trade mark number 1177725 (classes 37, 41 and 42) – Über Geeks (stylised) - in the name of Uber Geeks Pty Ltd

DELEGATE:

Adrian Richards

REPRESENTATION:

Opponent: Samuel Rees, Molly Flynn and Ania Salehirad of IP Partnership

Applicant: Jenny Baker and Miriam Stiel of Allens

DECISION:

2021 ATMO 4

Trade Marks Act 1995 (Cth) – application under section 92 – evidence of use considered – use of the trade mark established for some services –

discretion considered and not exercised – trade mark removed for some services

Background

1. Uber Geeks Pty Ltd (‘Opponent’) is the registered proprietor of the following trade mark:

(‘Trade Mark’)

1. The Trade Mark has been registered since 23 May 2007 in respect of, in general terms, advice, training, support, repair and hiring services in relation to computer software and hardware.1

2. 
   

   On 13 December 2018, Uber Technologies Inc (‘Applicant’) filed an application for removal of the Trade Mark from the register (‘Application’). The Application was advertised for opposition purposes on 10 January 2019. The Opponent filed a notice of opposition in the form required by the Trade Marks Regulations 1995 (Cth).2 The notice of opposition, among other things, asserted that the Opponent was using the Trade Mark and had continuously done so since June 2007. This office sent a copy of the notice of opposition to the Applicant, who responded by filing a notice of intention to defend the

1 A full listing of the services appears in the Annexure to these reasons.

2 Each reference to a regulation in these reasons is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Application from opposition. This office gave a copy of the notice of intention to defend to the Opponent, thereby beginning time for the parties to file their evidence.3 Once the evidence had been filed, this office invited the parties to request to be heard on this opposition. The Opponent sought to be heard first, with the Applicant later informing this office that it would also attend a hearing of this matter.

1. The hearing was held by me, a delegate of the Registrar of Trade Marks, on 15 October 2020. Jenny Baker and Miriam Stiel of Allens attended for the Applicant and Samuel Rees, Molly Flynn and Ania Salahirad of IP Partnership appeared for the Opponent. Peter Verhoeven of the Opponent also attended the hearing as an observer.

Evidence

1. The following declarations were filed as evidence:

Evidence in support

Peter Verhoeven, Sole Director of the Opponent, made 9 August 2019 with annexures A-H.

Evidence in answer

Michael Anthony Rumore, Private Enquiry Agent and Managing Director of Rumore and Associates, made 29 November 2019 with annexures A-F.

Evidence in reply

Peter Verhoeven, made 31 January 2020 with annexures A-K.

1. Both of Mr Verhoeven’s declarations include a variety of examples of what is said to be historical uses of the Trade Mark. Much of what is put forward is plainly not use as a trade mark or is undated. The later-filed declaration also describes circumstances that are alleged to have prevented use of the Trade Mark on one of the Opponent’s websites, ubergeeks.com.au.

1. Mr Rumore’s declaration reveals that the declarant was asked by the Applicant on 31 October 2018 to investigate use of the Trade Mark. It then reads into evidence and annexes copies of various internet search results conducted between 1 and 11 November 2018.

3 Trade Marks Regulations 1995 (Cth) reg 9.16(3).

Grounds, relevant period, onus and standard

1. The Application alleges both grounds for removal, ss 92(4)(a)-(b).4 Sufficient time has passed for para (b) to be alleged.5 Since that has been raised, it is unnecessary to consider para (a).6

2. Section 92(4)(b) is reproduced below:

92 Application for removal of trade mark from Register etc.

(4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) …

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)    used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. The three-year period mentioned above ended on 13 November 2018 (‘Relevant Period’). This is an allegation that the Opponent must rebut.7 The Opponent relies on use of the Trade Mark in good faith during the Relevant Period for its rebuttal.8 It has also requested that, should such use not be established that I exercise the residual discretion not to remove it from the register.9 All findings of fact in these reasons are based on the  ordinary civil standard of the balance of probabilities.

Discussion

1. As can be seen from images further below, the Opponent’s business is known as ‘Geekmobile’. This business provides computer repair, servicing and support to the public. An eponymous aspect of this service provision is the dispatching of technicians to clients’ homes and businesses to provide repairs and the like. It is with respect to the technicians that the Opponent’s position regarding use of the Trade Mark is found—it

4 All references to sections in these reasons are to the Trade Marks Act 1995 (Cth).

5 Trade Marks Act 1995 (Cth) s 93(2), as at 17 November 2017.

6 Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd (2018) 132 IPR 131, 136-7 [21]-

[22] (Hearing Officer Richards).

7 Trade Marks Act 1995 (Cth) s 100(1)(c).
8 Ibid s 100(3)(a).

9 Ibid s 101(3).

says it refers to and therefore markets its itinerant technicians as Über Geeks. While all this may be the case, as I have written above, I must make findings of fact on the balance of probabilities. Those findings must find a basis in the evidence.

1. When it comes to actual examples of use of the Trade Mark within the Relevant Period, the Opponent’s evidence is a little thin. The Applicant has, in its submissions, managed to cast significant doubt over just about every example provided. Mr Verhoeven has declared that certain of his examples were taken from after the Relevant Period. These must be disregarded. Many others are undated and equally must be set aside.

1. The Opponent’s evidence establishes that, during the Relevant Period, it purchased from the internet search engine Google’s AdWords program a number of keywords very similar to the Trade Mark. This is not use as a trade mark as such activity is not visible to consumers of the Opponent’s services.10

2. The Opponent’s evidence appears to show activity during the Relevant Period of a couple of email addresses suffixed with @ubergeeks.com.au. There is no indication in the evidence that either email address was customer-facing. The subject lines visible in each of these inboxes shows one exclusively taken up with marketing materials from Google while the other was apparently used internally by the Opponent, for coordinating technicians’ attendance at job sites.

1. A number of invoices appear in the Opponent’s evidence that show it paid for email hosting and registration of the ubergeeks.com.au domain during the Relevant Period. This does not establish use of the Trade Mark, as again, nothing in these invoices nor the fact that the Opponent was paying them demonstrate any customer-facing advertisement of the Trade Mark. Indeed, as the Applicant submits, there is no evidence that this domain name resolved to a website during the Relevant Period. In fact, the Opponent’s evidence suggests quite the opposite, stating that the website was down for most of the Relevant Period due to a distributed denial-of-service attack (‘DDoS’). I refer to the DDoS issue in my discussion below under the heading ‘Ubergeeks.com.au’.

10 Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd (2016) FCR 161, 205 [242] (Katzmann J).

1. Some of the Opponent’s evidence is taken up with showing ways that it would direct traffic to its geekmobile.com.au website. For example, a screenshot from the Opponent’s Facebook page includes a link to geekmobile.com.au. The final link in the chain is, according to the Opponent, that the geekmobile.com.au website displayed the Trade Mark during the Relevant Period. But, while the only printout of this website tendered by the Opponent does include the Trade Mark, it is from 6 February 2019 (after the Relevant Period). In contrast, the Applicant’s evidence includes a screenshot captured by Mr Rumore on 8 November 2018 (within the Relevant Period). In the Applicant’s evidence this same section of the page does not include the Trade Mark. The earlier image refers not to ‘Über Geeks® computer repair technicians’ but simply to ‘techs’. I have set out both examples below this paragraph. On balance it is likely that the Opponent updated this website to include the Trade Mark prior to taking the screenshot but after the Relevant Period.

1. Some other invoices show that the Opponent paid for Yellow Pages advertisements during the relevant period. The content of some of these advertisements is uncertain, but at least one example is clearly enough from within the Relevant Period, since it is corroborated as such by the Applicant’s evidence in answer. I return to this evidence below under the heading ‘Yellow Pages’.

Ubergeeks.com.au

1. As the Applicant I think fairly concedes, the Opponent’s printout of its other website ubergeeks.com.au shows use of the Trade Mark:

1. This image was, according to Mr Verhoeven, taken on 6 February 2019. That is, it is from around two and a half months after the end of the Relevant Period. Mr Verhoeven claims the site was live from 27 February 2015 to 7 December 2015, and then down for 38 months, restored to service on 11 February 2019. The downtime is said to have been due to a ‘DDoS ransom attack’. This claim was apparently made by a Mark Reid at Mark Reid Consulting and by Saul Willers at PlexityNet. No information about these two people is offered. Whilst these proceedings are not subject to the rules of evidence, the nature of this aspect of the Opponent’s evidence shows up a practical issue that the hearsay rule seeks to prevent. Mr Verhoeven declares that Messrs Reid and Willers said that there was a DDoS attack, which is not evidence of the thing taking place. A claim as strong and as specific as a DDoS ransom attack with effects lasting several years needs more than a submission dressed as evidence. For example, it is conspicuous that, in Mr Verhoeven’s own words, a ‘ransom attack’ is said to have occurred yet no evidence of an associated ransom demand is in evidence. Elsewhere in the same declaration this downtime is described as a ‘technical glitch’. This jarringly different characterisation of the event causes me to question whether indeed there really was a cyber-attack or something more mundane. This lack of clear, consistent evidence has led me also to conclude that it is unnecessary to explore whether this submission describes any circumstances that served as an obstacle to use of the Trade Mark.

1. Moreover there is no way for me to conclude the website was in operation during that sliver right at the beginning of the Relevant Period from 13 November to 7 December

2015. All that is in evidence is a Wayback Machine printout from 27 February 2015. To conclude that a website live in February must then have been live in mid-November (but down by mid-December) of the same year would be a finding without evidence. On balance, it is more likely than not that this page was not available to the public at any point during the Relevant Period.

Yellow Pages

1. The Opponent has included in evidence copies of its print and online Yellow Pages entries. Mr Verhoeven declares that the former appeared in the phone directory in 2018 and 2019, much of which would have fallen within the relevant period. Supporting this contention are a number of invoices from Sensis Pty Ltd describing a charges for ‘Yellow Pages Book – Gold Coast 2018/19, Computer Equipment – Repairs, Service & Upgrades’, ‘Yellow Pages Book – Gold Coast ITC 2018, Computer Equipment – Repairs, Service & Upgrades’ and ‘Yellow Pages Print – Brisbane – Logan City Beenleigh Region 2018, Computer Equipment – Repairs, Service & Upgrades’. The Applicant contends that the image from the phone directory is undated—there is nothing directly linking those invoices to the example of the print advertisement in evidence. What the invoices do make clear is that the Opponent did run some advertising in at least three regional editions of the Yellow Pages, during the Relevant Period. With that in mind and with nothing indicating to the contrary, on balance, it is more likely than not that the Opponent’s example of print advertising did run during the Relevant Period. It is a large advertisement, around a full page, so I have included it at Annexure B to these reasons. As can be seen circled in red in the top left corner, the entry itself is titled UBER GEEKS. That the entry is titled in this way is a clear example of trade mark use—the reader is informed that the supplier of these services goes by UBER GEEKS (and, reading further, also as GEEKMOBILE).

1. Toward the middle of the advertisement also appears the text 6. You Need an Über Geek® followed by an explanation of the qualifications of the Opponent’s technicians. This is similar usage to the Opponent’s Yellow Pages online advertisement, which I am certain ran during the Relevant Period, since the Applicant’s evidence includes a copy taken on 2 November 2018. Part of that online advertisement appears below:

1. The Applicant contends that such examples are not use of the Trade Mark because a reference to the technicians (also known as the Über Geeks) is not a reference to the trade source (being Geekmobile). I do not accept this characterisation since, in both of these examples, the Opponent is offering services and

a service will not exist before its supply. Thus, use of a trade mark in relation to services may readily be understood as a use in and about the soliciting and conclusion of contracts for the supply thereafter of services.11

1. While it is at least arguable in these examples that much of the soliciting for business is done in relation to the GEEKMOBILE trade mark, that is accompanied by clear representations that the supply will be carried out and indeed is carried out by the Opponent’s Über Geeks. This is also use of the Trade Mark during the Relevant Period.

Scope of use

1. An issue raised at the hearing by the Applicant relates to whether any demonstrated use of the Trade Mark was in relation to all of the services set out at Annexure A. No services were singled out by the Applicant as not in use. Doing so, while helpful in some situations, is not strictly necessary, as the onus to establish that use occurred falls on the Opponent.

11 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 509 (Gummow J), quoted in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514, 537 [87] (Nicholas, Yates and Beach JJ).

1. Carefully looking over the specification of services it is plain enough from the Yellow Pages advertising that they solicit business in relation to each of the Class 37 services (being, in summary form, installation, repair and maintenance of computers).

1. Turning to Class 41, the Opponent’s training services, while less prominently advertised are still on offer. The Yellow Pages print advertisement solicits ‘ONE-ON-ONE TRAINING IN PLAIN ENGLISH’, and the online version includes the text ‘Computer Help & Training – For one on one training Free Call…’ In contrast, there is no evidence that the Opponent offers electronic publication of information as a service to its customers, nor is there any evidence that the Opponent provides games or game services at all, let alone in relation to the Trade Mark.

1. The Trade Mark is registered in relation to a vast listing of services in Class 42. For present purposes, these fall into three categories: services very much offered by the Opponent, services that might appear to be offered by the Opponent and services not offered by the Opponent. Most of the services listed in this class, such as the various advisory, installation, and support services echo claims in Class 37 and thus fall into the first category. The uncertainty of the second category derives from the open-ended nature of some of the services solicited in these advertisements. For example, ‘fixing computers’ could be a relatively simple affair of running a few diagnostics and replacing broken parts/programs, but it could just as easily encompass bespoke solutions involving, for example, preparing software scripts. I am unable to find that such broadly proposed offerings cannot also satisfy claims such as ‘writing of computer programs’ and as such, on balance, I find the Trade Mark was used in relation to them too. Just a handful of claims fall into the third category. There is no evidence that the Opponent hosts websites, runs an internet café, rents out computers or rents out software, nor could it reasonably be concluded that such services were part of the broader remit of services offered by the Opponent in relation to the Trade Mark.

1. As such I conclude that the Trade Mark has been used during the Relevant Period in relation to all but the following services (‘Unused Services’):

Class 41:electronic publication of information on a wide range of topics, including online and over a global computer network; game services

provided online (from a computer network); provision of games by means of a computer based system

Class 42: computer hire;  computer  rental;  computer  time-sharing;  hosting computer sites (web sites); internet cafe services (computer rental); personal computer hire; rental of computer apparatus; rental of computer equipment; rental of computer firmware; rental of computer hardware; rental of computer programs; rental of computer software; rental of computers

Discretion

1. The Opponent bears the burden  of  persuasion  in  relation  to  the residual  discretion  in s 101(3).12 Submissions in relation to this issue tread a well-worn path relating to the non- exhaustive list of factors taken from the decided cases.13 The nub of the argument, however, is that the Opponent has not abandoned the Trade Mark, that it has continuously used it in relation to its services and that is has made sales of its services after the Relevant Period. Looking again at the list of Unused Services picked out above, it seems those arguments were not formulated with them in mind. The Opponent has, on the evidence, never entered any of those fields nor would removal of them cause it or the public interest any harm. I refuse to exercise the discretion in relation to the Unused Services.

Decision and costs

1. While the Opponent has established use of the Trade Mark within the Relevant Period for most of its services, it has not demonstrated the same for the Unused Services. Having decided not to exercise my discretion to leave them on the register, my decision is that the Trade Mark be removed with respect to the Unused Services. Given it is the right of both parties to appeal this decision to the courts, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then the Trade Mark shall not be removed with respect to the Unused Services until the appeal has either been discontinued or, in the event of a decision from the Court, the Application should be dealt with as the Court sees fit.

12 Optical 88 Ltd v Optical 88 Pty Ltd (2010) 275 ALR 526, 580 [273] (Yates J).

13 See, eg, Re Hermes Trade Mark [1982] RPC 425, 433-5 (Falconer J) and E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69, 111 [202] (Flick J).

1. Both parties requested an award of costs. The usual rule is that costs follow the event, and there is no reason to deviate from that here. Neither party has been entirely successful, so it is preferable that the parties bear their own costs. As such, I decline to award costs.

Adrian Richards Hearing Officer

Delegate of the Registrar of Trade Marks 18 January 2021

Annexure A – specification of services

Class 37: Computer support services (installation repair and maintenance of computer hardware and peripherals); information technology (IT) services (computer and computer peripherals installation and maintenance); installation and repair of computer hardware; installation of computerised information systems; installation of computers; installation, maintenance and repair of computer hardware; installation, maintenance and repair of computer peripherals; maintenance and repair of computer hardware; maintenance and repair of computers; maintenance of computers; maintenance services relating to computer hardware; repair of computers; residential, commercial and industrial installation and repair of electrical and computer wiring and cabling

Class 41: Computer based training; computer training;  computer  training  advisory  services; computerised training; electronic publication of information on a wide range of topics, including online and over a global computer network; game services provided online (from a computer network); instruction in the use of computers; provision of games by means of a computer based system

Class 42: Advisory services relating to computer hardware; advisory services relating to computer programming; advisory services relating to computer software; advisory services relating to computer systems analysis; advisory services relating to computer systems design; analytical services relating to computers; computer advisory services; computer analysis; computer consultancy; computer consultancy services; computer database consultancy services; computer design; computer disaster recovery services; computer engineering; computer engineering consultancy services; computer firewall services; computer hire; computer network services; computer program advisory services; computer program maintenance services; computer program  updating services; computer programming; computer programming consultancy; computer rental; computer research services; computer security services (design and development of secure computer hardware, software and systems); computer security services (programming and software installation repair and maintenance services); computer software advisory services; computer software consultancy; computer software design; computer software development; computer software engineering; computer software programming services; computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); computer system design; computer systems analysis; computer time- sharing; consultancy in the field of computer hardware; consultancy in the field of computer software; data conversion of computer programs and data (not physical conversion); design and development of computer hardware (for others); design and development of computer software (for others); design of computer codes; design of computer databases; design of computer hardware; design of computer languages; design of computer programs; design of computer software; development of computer based networks; development of computer codes; development of computer programmes; development of computer software; development of computer software application solutions;

development of computer systems; diagnosis of faults in computer software; duplication of computer programs; engineering services relating to computer programming; engineering services relating to computers; hosting computer sites (web sites); information services relating to computers; information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); installation and maintenance of computer software; installation of computer software; internet cafe services (computer rental); maintenance of computer programs; maintenance of computer records; maintenance of computer software; modifying of computer programs; personal computer hire; preparation of reports relating to computer programs; preparation of reports relating to computers; providing information, including online, about design and development of computer hardware and software; provision of information relating to computer programming; provision of information relating to computer programs; provision of information relating to computers; provision of technical information in relation to computers; recovery of computer data; rental of computer apparatus; rental of computer equipment; rental of computer firmware; rental of computer hardware; rental of computer programs; rental of computer software; rental of  computers; repair of computer software; research relating to computer programming; research relating to computers; scientific computer programming services; testing of computer installations; testing of computer programs; testing of computers; updating of computer programs; updating of computer software; updating of memory banks of computer systems; upgrading of computer software; writing of computer programs; writing of computer software

Annexure B – Yellow Pages print advertising